Randall E. Kay v. SEBASTIAN KLEVEROS / COMCEPT - INTERNET VENTURES
Claim Number: FA1602001659119
Complainant is Randall E. Kay (“Complainant”), California, USA. Respondent is SEBASTIAN KLEVEROS / COMCEPT - INTERNET VENTURES (“Respondent”), represented by Dr. John Berryhill, PhD Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nvrt.com>, registered with Uniregistrar Corp.
The undersigned certify they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC, Honorable Karl V. Fink (ret.) and Houston Putnam Lowry, Chartered Arbitrator (Chair) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2016; the Forum received payment on February 1, 2016.
On February 2, 2016, Uniregistrar Corp confirmed by e-mail to the Forum that the <nvrt.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nvrt.com. Also on February 4, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 29, 2016.
On March 9, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Karl V. Fink (ret.), The Honourable Neil Anthony Brown QC, and Houston Putnam Lowry, Chartered Arbitrator (Chair) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Procedural Issue: Concurrent Court Proceedings
Complainant has filed suit against Maya Mark Inc., Ted Tobson, and <nvrt.com> in United States District Court for the District of Nevada. Maya Mark Inc., and Ted Tobson are the prior registrants and owners of the <nvrt.com> domain name according to Complainant. While the Respondent is neither Maya Mark Inc., or Ted Tobson, Complainant’s suit was also brought against the domain <nvrt.com> under 15 U.S.C §1125(d).
In situations where concurrent court proceedings are pending, such as this case, some panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
This Panel is more persuaded by the former panels’ reasoning rather than the latter panels’ reasoning. The parties to this Proceeding are not identical to the parties in the litigation. Neither party to this Proceeding has asked this Panel to abstain from exercising its jurisdiction. It is not certain the Nevada federal court will be able to issue an order which binds the current registrar located in the Cayman Islands (something this Panel can do). Complainant has submitted to the jurisdiction of the courts at the principal office of the registrar in its Complaint. This Panel also has substantial expertise in the subject area, having issued a combined 2,261 decisions. A court may also review this Panel’s decision, so this Panel is not ousting a court of jurisdiction. These factors weigh in favor of this Panel deciding this case. Therefore, this Panel will consider this Complaint.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns United States Trademark Registration No. 4,875,162 for the mark for the four letters "NVRT", with stylized lettering/design, registered on December 22, 2015 on the Principal Register with the United States Patent and Trademark Office. Complainant uses its NVRT mark for athletic shirts, athletic shorts, athletic tops and bottoms for yoga, and hats. Complainant further intends at this time to use its NVRT mark on pants, sweatshirts, and t-shirts.
FACTUAL AND LEGAL GROUNDS
This Amended Complaint is based on the following factual and legal grounds:
a. Specify in the space be/aw the manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(J),· UDRP Policy¶4(a)(i).
b. Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy 4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Respondent's bad faith is most glaringly shown by Respondent's receipt via transfer of the NVR.T.com domain name after Complainant submitted the original Complaint to the UDRP Provider on February 1, 2016. Respondent received the transfer from predecessor registrant Tim Schoon, who only recently had become the then-registrant via transfer of the NVRT.com domain name in response to Complainant's filing of a federal court lawsuit in which Complainant asserted violations of the Anticybersquatting Consumer Protection Act of 1999 against Respondent's predecessor.
In particular, on January 14, 2016, Complainant filed a "Verified Complaint for Transfer of Domain Name NVR.T.com and Damages for Violations of the Anticybersquatting Consumer Protection Act of 1999". Complainant sued three defendants: (1) the then-Registrant organization Maya Mark Inc. (a Nevada corporation with an expired business license and whose status as a Nevada business entity was "Revoked"); (2) the then-Registrant name Ted Tobson; and (3) NVRT.com (under in rem jurisdiction) which was then hosted at a Registrar located in Nevada.
On January 22, 2016, Complainant formally served then-Registrant Maya Mark Inc. with the federal court lawsuit through its registered agent for service of process. See Exhibit 5 (proof of service proving service on Maya Mark Inc. on January 22, 2016). In response to Complainant's service of summons and complaint in the federal lawsuit, in an effort to thwart Complainant's lawsuit and to impede and to delay Complainant from obtaining transfer of the NVRT.com domain name, on or about January 25, 2016 defendant Maya Mark Inc. transferred the NVRT.com domain name to a new Registrant Tim Schoon in the Netherlands and a new Registrar Uniregistrar Corp located in the Cayman Islands. Prior Registrant Maya Mark Inc. had the NVRT.com domain name in its name for well more than a year prior to January 25, 2016. It is Complainant's federal court lawsuit, and the merit of that lawsuit, that caused Tim Schoon to obtain possession of the NVRT.com domain name in an effort to impede Complainant's ability to secure the transfer of the NVRT.com domain name. Following Complainant's filing of the original complaint in this matter on February 1, 2016 (when Tim Schoon was the named Registrant for NVRT.com), Tim Schoon transferred the NVRT.com domain name to his Facebook friend, now-Registrant Sebastian Kleveros I Comcept Internet Ventures. Complainant received email confirmation of the filing of his original Complaint in this matter with ADR Forum on February 1, 2016 at 6:17:39 p.m. PST. ADR Forum notified Registrar Uniregistrar Corp via email of Complainant's Complaint on February 2, 2016 via email at 09:22 UTC-5. Registrar Uniregistrar Corp attended to ADR Forum's email and locked the domain name on February 2, 2016 at 11:20 UTC_-5, just three minutes after Tim Schoon had transferred the NVRT.com domain name to now-Registrant Sebastian Kleveros I Comcept Internet Ventures at 11:17 UTC-5 on February 2, 2016.
According to prior Registrant's and Respondent’s Facebook pages, Sebastian Kleveros and Tim Schoon are at least Facebook friends.
Registrant does not use the brand or mark NVRT commercially in good faith. Registrant does -not market goods or services at the NVRT.com url; rather, the NVRT.com url is "for sale". For all the foregoing reasons, Respondent should be considered as having no rights or legitimate interests in respect of the domain name NVRT.com.
c. Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3),· UDRP Policy 14(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Registrant's bad faith in registering and using the NVRT.com domain is shown by (1) the fact that Registrant first registered the domain NVRT.com on February 2, 2016 - after Complainant's December 22, 2015 Registration of NVRT as his trademark with the United States Patent and Trademark Office on the Principal Register; (2) the fact that Registrant's predecessor Tim Schoon first registered the domain NVRT.com on or about January 25, 2016 -after Complainant's December 22 2015 Registration of NVRT as his trademark with the United States Patent and Trademark Office on the Principal Register; (3) Registrant was on notice (actual or constructive) that Complainant claimed interest in the NVRT.com domain name because Complainant had already sued Registrant's predecessor-in-interest for transfer of the NVRT.com domain name for violation of the Anticybersquatting Consumer Protection Act of 1999; (4) Registrant is not commonly known by the domain name NVRT.com or the name NVRT; (5) Registrant is not making any legitimate noncommercial or fair use of the domain name; (6) that a user currently going to www.NVRT. com will be invited to buy the Nvrt.com website name.
B. Respondent
This dispute involves a domain name which was acquired in a batch transaction of 41 four-letter domain names prior to any notice of a dispute whatsoever. As described in detail below, the various transfers of the domain name were solely incident to a commercial transaction involving this batch of domain names, and was not undertaken with either actual or constructive knowledge of the Complainant's claim.
The Complainant's claim is premised on recently-acquired and pending formal registrations in the United States, which are supported by no substantial commerce whatsoever, and the Complainant has followed an unusual strategy to pursue its claim without notice to the relevant registrar, registrants, or any person with actual control of the domain name registration.
Due to the coincidental timing of events prior to notice by the Respondents of this Proceeding, and the serious accusation of "cyberflight", it is important at the outset to document the history of the Respondents' acquisition and transfer of the domain name. As demonstrated below, the domain name was acquired as part of a transaction involving 41 four-letter domain names initiated on January 11, 2016 for registration by a joint venture of the Respondents.
Mr. Tim Schoon and Mr. Sebastian Kleveros, are principals in a partnership venture named Comcept Internet Ventures, which is a joint venture. These shall be collectively referred to herein as "Respondents".
On January 10, 2016, Mr. Schoon was contacted by a domain broker offering a portfolio of 41 four-letter domain names for sale, for a total cost of US $18,000. Mr. Schoon agreed to this offer. On January 12, 2016, a transaction was initiated among Mr. Schoon, the broker, and the seller. The indicated seller was Nomino.de, a German domain trader which, as is now apparent, acquired the disputed domain name prior to dissolution of the registrant, took over administration of the account in which the disputed domain name was registered, and then sold the names prior to updating the WHOIS information for them. As indicated in the Escrow.com closing record payment for the 41 four-letter domain names was made by Mr. Schoon on January 21, and payment was disbursed to the seller. Also shown is Mr. Kleveros' 50% partnership payment to Mr. Schoon for the purchase.
On January 22, the day after payment was received by Escrow.com, a batch transfer of the domain names was initiated, to move them to Mr. Schoon's registration account at the registrar Uniregistry.com. (screenshots of registrar account panel showing initiation date). These transfers were completed on January 25, confirming that the authoritative control and the auth codes provided by the seller, a German firm named Nomino.de, were correct.
Successful transfer was indicated to Escrow.com as noted in the Escrow.com transaction record. On February 2, a further batch transfer of 72 domain names was initiated by Mr. Schoon, to move 72 domain names, including the disputed name, into the registration account designated by the joint venture for holding the domain names which had been acquired by the joint venture. (screenshots of registrar account panel showing intra-registrar transfer initiated February 2)
At no point during the acquisition, registrar transfer, and then final transfer into the current account, were Mr. Schoon, Mr. Kleveros, or anyone associated with their individual companies or the joint venture aware of any legal proceeding in relation to the domain names. As it turned out, the registrar had received notice of the pending UDRP proceeding from NAF on the morning of February 4, and between the time of receipt of the notice from NAF and the registrar's reply to NAF1, the batch transfer initiated several days earlier had completed, stating:
"On review of the domain transaction history, we note for your information that the registrant of the domain name transferred the domain name to the present registrant at 11:17 UTC -5, which was moments before the lock was applied in processing the notice from the Forum. The transfer of this particular domain name was incident to a batch of domain names which were transferred to the present registrant by the previous registrant, and does not appear to have been specifically prompted by the filing of this UDRP.
Between our receipt of the UDRP notice and our action upon it within those two hours, we engaged in no communication with the registrant which would have alerted them to the filing of the UDRP proceeding. As the UDRP provides two business days for the registrar to act upon the UDRP provider notice, we do not see an express provision for reversing a registrant transfer which may occur prior to actual registrar notice and action upon the UDRP provider notice. However, we do wish to make the circumstances here clear to the Forum and to the Parties."
As noted by the registrar in its reply to NAF, no communication was conducted with Mr. Schoon, Mr. Kleveros, or anyone associated with the joint venture, that a UDRP had been initiated. The batch transfer was initiated on February 2, prior to any notification of this Proceeding to the parties or the registrar. On the afternoon of February 4, Mr. Schoon and Mr. Kleveros received, from the NAF, their first notice that the domain name was involved in a dispute of any kind. The transfer noted by the registrar was that initiated by the Respondents to place the domain name into the registrar account designated for the joint venture.
The transfer of the domain name which occurred prior to notice of this Proceeding, and prior to actual notice by the registrar, was incident to transfer of a batch of domain names, including the 41 four-letter domain names for which the Respondents had agreed to purchase on January 11, 2016. Since having received notice of this Proceeding, the domain name is duly locked, and the Respondents hereby appear to dispute the allegations of the Complaint. Accordingly, there has been no attempt at "cyberflight", as the attached documentation demonstrates that the transfers were incident to an ordinary commercial transaction undertaken with no notice whatsoever of the Complaint or its filing of the Complaint
in this matter. As will be discussed further below, the Complainant's litigation in Nevada was at no time served upon the Respondents or their predecessor-in-interest in the domain names, nor did they have actual notice thereof, and nor was it served on the then-current registrar of the domain name.
The accusation of "cyberflight" is misplaced here, as demonstrated by the transaction records. "Cyberflight" is the deliberate churning of registration data with notice of a dispute, in order to frustrate the conduct of proceedings. The Complainant does not show that it ever served the Nevada proceeding on any party whatsoever, nor did the Complainant at any time engage in contact with the Respondents or their predecessors. The Complainant at no time served or otherwise sent the Nevada proceeding on any party to this Proceeding or on any party having effective control of the domain name registration. The Complainant at no time notified any registrar of the Nevada proceeding which, had the Complainant done so, would have locked the domain name at that time. The Complainant at no time emailed a service copy of the Complaint to the Respondents or any parties associated with them. The first actual notice of this Proceeding by the Respondents occurred on February 4, 2016, by which time the acquisition and transfer of the domain name to the joint venture account was complete. The Respondents at no time engaged in any transfer of the domain name with any notice whatsoever, that a dispute of any kind was imminent or had been filed.
The first criterion of the Policy requires the Complainant to show that the domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights.
To this end, the Complainant presents a Facebook page and a US trademark registration which issued a few weeks ago in December 2016.
The Complainant does not describe any sales volume, advertising expenses or other indicia of consumer recognition because, in point of fact, the Complainant's showing of "commerce" via a Facebook posting is an artifice. The Complainant conducts no substantial commerce whatsoever, and did not mention that the Complainant operates a website at nvrtyoga.com which states "Coming Soon", and the Complainant operates a corresponding Twitter account for this phantom business with no tweets issued thus far. Additionally, the Complainant's Facebook page, purporting to "sell" a pair of shorts with "NVRT" printed on them, no longer actually advertises the shorts in question. The Complainant conducts no commerce whatsoever.
The Complainant further submits a copy of US TM Reg. No. 4875162 issued a few weeks ago, on December 22, 2106 to "Kay, Randall E., a U.S. citizen, parent of Avery S. Kay and Noah A. Kay". It is not clear why the registration was apparently obtained on behalf of two children. The registered US mark is for the logo:
which is described therein as:
The mark consists of the letters "NVRT" with stylized lettering for the first three letters of the four letter word and with the "T" depicted by the design element of a yoga athlete performing an arm balance in a "T" shape with the torso forming the vertical line of the "T" and the legs forming the horizontal line of the "T".
For
"Athletic shirts; Athletic shorts; Athletic tops and bottoms for yoga."
Concerning the stylization of the registered mark, and the absence of the letter T, the circumstances here present one of the occasional situations in which the graphical presentation of the mark, as shown and further described in the proffered registration, do not directly resemble the letters "NVRT" per se. As noted in:
Tesla Industries, Inc. v. Stu Grossman d/b/a SG Consulting2 NAF Claim Number: FA0508000547889 http://www.adrforum.com/domaindecisions/547889.htm
Several Panels have held that block lettered domain names, even where the letters are identical to those in stylized marks are not “confusingly similar” thereto. See, e.g., National Kidney Foundation v. Loss Girasoles, AF-0293 (eRes August 31, 2000) (domain name <NKF.org> not confusingly similar to Trademark NKF consisting of a highly stylized rendering of those letters); Maha Maschinenbur Haldenwang v. Rajni, D2000-1816 (WIPO March 2, 2001) (Complainant’s Trademarks were highly stylized and hence consumer confusion was unlikely.). Further, a number of Panels have held that without the stylized component of the Trademark, Complainant lacks rights in the words standing alone, which is precisely the situation we have here. See, e.g., Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (Complainant lacked “relevant rights” in the word “zero” where its Trademark was a “stylized form of the word zero . . . rather than the word zero itself”); Physik Instrumente v. Kerner, D2000-1001 (WIPO Oct. 3, 2000) (involving stylized German trademark “PI”); Acoustical Publications v. Clintron, AF-0319 (eRes Oct. 3, 2000) (registration of stylized Trademark “Sound & Vibration” had disclaimed the words “sound” and “vibration”); High-Class Distribs. v. Online Entm’t Servs., D2000-0100 (WIPO May 4, 2000) (involving stylized U.S. registered trademark “High-Class by
Claudio Budel” with disclaimer of exclusive right to use “High Class” apart from the mark as show); Brisbane City Counsel v. Warren Bolton Consulting, D2001- 0047 (WIPO May 7, 2001) (Stylized mark including words “Brisbane City” may have acquired distinctiveness, but the words “Brisbane City” by themselves were merely descriptive of a geographical location and had no secondary meaning).
Further, in many instances, it has been said that when one “peels away the graphic element, all that remains is a descriptive or generic word”. Robert A. Badgley, Domain Name Disputes 6-52 (Aspen Law and Business Supp. 2003).
As it clear from the person depicted upside down in the Complainant's logo, and from the slogan "YOUR WORLD IS ABOUT TO BE INVERTED" at the Complainant's yet-to-be launched website at nvrtyoga.com, the textual component left after "peeling away the graphic" element is intended to be understood as "invert", using the phonetically-equivalent letters "NVRT" after removing the vowels from the generic word. While the Complainant does not describe its yoga business in any depth at all, it appears clear that it will revolve around some type of inverted posture. Hence, the textual component of the Complainant's logo - the phonetic equivalent of "invert" - appears to be primarily descriptive of the business in which the Complainant intends to engage.
Under the second criterion, the Complainant must prove that the Respondent has no rights or legitimate interest in the domain name. Here, the Complainant describes a lawsuit which it filed in the state of Nevada against a prior registrant of the domain name, almost immediately after the US trademark registration issued. Several observations are worth making about that lawsuit, particularly in relation to the Complainant's claim of cyberflight.
First, the Complainant never served nor sent notice of the lawsuit to any party then- responsible for the domain name. The docket for the Complainant's suit is attached. As noted therein, the Complainant had requested the previous registrar to issue a certificate to the court, locking the domain name and authorizing the court to order transfer of the domain name. The Complainant has omitted from its description of the lawsuit, the letter which was filed with the court by the registrar whom the Complainant contacted about the suit. That letter is included and is from a previous registrar of the domain name whom the Complainant served. It specifically notes that "PSI-USA was previously the registrar for the domain name." The Complainant took no additional steps to notify the then-current registrar at the time the Complainant initiated its action.
As noted above, the Respondents' recently acquired the domain name, prior to Complainant attempting to serve the previous registrar, in a purchase transaction along with 41 other four-letter domain names. Domain Names corresponding to short letter combinations are commercially valuable, independent of any trade or service mark claim, because they have generally applicable utility. For example, the letters "NVRT" are by no means exclusively associated with the Complainant. The letters "NVRT" can stand for:
National Veterinary Response Team Napa Valley Repertory Theatre
Ned Ver Reincarnatie Therapeuten Non Verbal Reasoning Test
A Google Search conducted on the letters "NVRT" yields some 141,000 results, among which the Complainant is not at all prominent, and which shows various acronymic uses of "NVRT" including the ones noted above (wherein the Dutch one is located at NVRT.nl), along with many others, such as a game entitled "NVRT".
The Respondents acquired this portfolio of four-letter domain names for their value as four-letter domain names. As noted in:
NAF Claim Number: FA1209001461862 http://www.adrforum.com/domaindecisions/1461862.htm
In these proceedings, the Complainant does not allege that Respondent has used the domain name in dispute for any purpose relating to keys, locks, door hardware, or any of the goods or services in which Complainant trades.
¶4(a)(ii). See BioDelivery Sciences International, Inc v HLK Enterprises, Inc. c/o Domain Admin, FA 0804002275189 (Nat. Arb. Forum May. 19, 2008) (finding that “based on the fact that the disputed domain name and Complainant’s mark contain only four letters that could stand for many things unrelated to Complainant’s business, the Panel finds that Respondent’s use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy ¶4(a)(ii).”)
Franklin Mint Federal Credit Union v. GNO, Inc. NAF Claim Number: FA0612000860527 http://www.adrforum.com/domaindecisions/860527.htm
This is a legitimate activity in which there are numerous suppliers in the United States.”); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names).
Respondent claims that it has rights or legitimate interests in the <fmcu.com> domain name because the disputed domain name is simply an abbreviation for many things, including several other credit unions, including: “Fort McPherson Credit Union,” “Fort Monroe Credit Union,” “Fort McLellan Credit Union,” “Firstmark Credit Union” and “Fred Meyer Credit Union.” Respondent also alleges that it has registered numerous four-letter domain names for their inherent value, including, inter alia, the domain name <fmcu.com>. As Respondent appears to be a generic domain name reseller, the Panel finds that Respondent has legitimate interests in the <fmcu.com> domain name pursuant to Policy ¶4(a)(ii).
The Franklin Mint decision further discusses the inherent value of short domain names and the considerable values of such names in the 2007 market:
"Indeed, the Respondent has registered a number of four-letter domain names for this purpose, merely because they are short, and hence inherently valuable. Attached hereto as Exhibit E is a copy of an article from the Domain Name Journal, a number of 4-letter, dot-com domain sales, including
<cmas.com> for $15,250, <eswc.com> for $11,111 and <krea.com> for
$10,500."
As noted in the industry blog DomainNameWire.com in a post dated October 2015, "Now that all of the three letter .com bargains have been picked over, it seems investors are on the hunt for the next best thing…four letter domain names." The article further describes 100 sales conducted that week, in which prices ranged from $749 to $25,000.
Accordingly, it can readily be seen why the Respondent's moved swiftly on an offer to acquire 41 of them for US $18,000.
The Complainant, claiming rights in a weeks-old US trademark registration for a phantom business, makes no allegation whatsoever that the Respondents have used the domain name for any purpose relating to the Complainant's limited claim in connection with "Athletic shirts; Athletic shorts; Athletic tops and bottoms for yoga" in which the Complainant claims rights. Trademark law does not grant monopolies in strings of letters, but only in their association with the goods or services with which those letters are used as a mark. Here, it is readily shown that the letters "NVRT" are not uniquely nor distinctively identified with the Complainant. The Complainant has no substantial business and no discernible consumer recognition whatsoever, and the Complainant's claim certainly does not rise to the level of a "famous" mark, even if we accept that the Complainant ever actually sold a single pair of shorts from a cursory Facebook posting.
Accordingly, the Respondent has paid a considerable sum for a collection of valuable short domain names, and there is nothing in the Respondent's use of the domain name which suggests any infringing use of the domain name by the Respondent3. The Respondent's use of the domain name has simply not violated any cognizable right of the Complainant.
The final criterion of the Policy requires the Complainant to show that the domain name was registered and used in bad faith. The "bad faith" element is an element of intent, and the non-limiting examples given by the Policy are directed to the question of "why did the Respondent register the domain name?" Was registration of the domain name informed by a specific predatory intent in relation to trade or service mark, or was the domain name registered for reasons having nothing to do with the Complainant and its claimed mark?
Here, the answer is readily determined from the correspondence and circumstances shown in the Respondents having accepted, on January 11, an offer from a broker for the then- registrant of the domain name to purchase 41 valuable four-letter .com domain names for $18,000. As noted in:
NAF Claim Number: FA1506001622383 http://www.adrforum.com/domaindecisions/1622383.htm
Further, Respondent rejects Complainant’s argument that it is a cybersquatter. Instead, Respondent urges the Panel that it is a generic domain-name reseller and provides, at Attached Annex 3, a list of acronyms registered by Respondent over the years as part of its business."
Here, of course, the list is evident in the agreement to purchase this name in conjunction with 40 others. The Respondents' registration of the domain name was clearly motivated by purposes having nothing whatsoever to do with the Complainant's trademark claim, and was motivated by nothing relating to the Complainant's litigation, about which no one, including the Respondents had notice at the time the Respondent agreed to purchase the lot. Moreover, the Complainant has not shown any use by the Respondent of the domain name having anything to do with athletic clothing or yoga. As noted in:
NAF Claim Number: FA0804001175189 http://www.adrforum.com/domaindecisions/1175189.htm
As discussed in the previous section, the disputed domain name and the asserted mark are comprised of generic and common terms. The four letters that create the asserted mark and the disputed domain name could stand for many things that do not interfere with Complainant’s business. Therefore, bad faith registration and use of the disputed domain name pursuant Policy ¶4(a)(iii) has not been proven.
Furthermore, Respondent is a resident and citizen of Sweden and the Netherlands, respectively, and are under no duty of notice of US trademark registrations. It is particularly true that the Respondents would have had no reason to know of the Complainant's non-existent clothing "business" conducted via a single Facebook post (now absent from the page), claiming rights under a US trademark registration which issued a few weeks ago in December 2015.
The Respondents freely admit that there has been a coincidence of circumstances which the Complainant may have found frustrating, and may have believed there was some sort of attempt to evade the Complainant's claim. However, the correspondence, sale conducted by third party escrow, and the registration records for the domain name, discussed above, demonstrate that the circumstances involving transfer of the domain name up to the time this Proceeding was commenced, are indeed mere coincidence. As soon as the Proceeding was notified to the registrar, the domain name was duly locked, and then followed the first notice whatsoever to the Respondents that this Proceeding has commenced. The Respondents have nothing to hide here, and believe that the purchase of 41 four-letter domain names for their inherent value speaks for itself, and was clearly not motivated by any knowledge of the Complainant's claim or existence.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and is not being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has rights in the NVRT mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,875,162, registered December 22, 2015). Panels have routinely found registration of a mark with USPTO (or any other governmental authority) is sufficient to demonstrate rights in a mark. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶4(a)(i)), Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption).
At this point in the proceedings, Complainant is not required to show it has rights in Respondent’s home country or Complainant has superior rights to Respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction) and Homer TLC, Inc. v. shahrul naim, FA1410001583870 (November 18, 2014).
It should also be said here that the Policy obliges a complainant to show only that it “has” a trade or service mark and that, consequently, the operative date for determining Complainant’s rights is the date the Complaint is filed.
Complainant next claims Respondent’s <nvrt.com> domain is confusingly similar to the NVRT mark as the domain includes the mark in its entirety and merely adds the gTLD “.com.” An added TLD (whether a gTLD or ccTLD) must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires a TLD. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”). To hold otherwise would eviscerate the UDRP, see State Farm Mutual Automobile Insurance Company v. kyran trader, FA1505001618292 (June 9, 2015) and Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA1505001620197 (June 16, 2014).
The Panel therefore finds Respondent’s <nvrt.com> domain name is confusingly similar to the NVRT mark in which Complainant has rights.
The Panel unanimously finds Policy ¶4(a)(i) satisfied.
By a majority vote, (Fink and Brown) Complainant has not established a prima facie case in support of its arguments Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent did not know about any claims related to the domain name because Complainant never served or sent notice to Respondent regarding the pending lawsuit against the domain name. Complainant served Maya Mark Inc. with a summons but there is no documentation to indicate that Respondent or the Registrar was similarly served.
A four-letter domain is a valuable property and can have many different purposes related to the letters “NVRT” which do not involve Complainant’s mark. Respondent purchased the domain in a batch of 41 four-letter domains. A respondent may have rights or legitimate interests in a disputed domain name where the respondent is a generic domain name reseller, depending of course on the facts of the individual case. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the <fmcu.com> domain name because it was a generic domain name reseller who owned numerous four-letter domain names). Respondent has rights or legitimate interests based on its status as a generic domain name reseller under the facts of this case.
Brother Lowry respectfully dissents for the following reasons: The fact Respondent has no rights or legitimate interests in respect to the domain name can be proven a number of ways:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Respondent failed to meet this test. No goods or services were offered on the web site (except the web site itself). Reselling domain names does not constitute a bona fide offering of goods or services for the purposes of the UDRP. To allow such an absurd construction would eviscerate the UDRP because every respondent could demonstrate rights by simply offering the relevant domain name for sale to the general public at the time of registration. The UDRP could be easily circumvented.
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights.
Respondent does not claim to be commonly known by the disputed domain name and there is no evidence in the record to support such a conclusion.
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Offering a domain name for sale to the public is not (i) a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or (ii) a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). I would conclude Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
By a majority vote, (Fink and Brown) the Panel finds Policy ¶4(a)(ii) NOT satisfied.
As the Panel has found by a majority that Complainant has not established the second element required under the Policy, it is not strictly necessary to consider the third element, bad faith. However, the Panel will deal with the issue of bad faith because there is some overlap between the two elements on the specific facts of this case.
By a majority vote, ( Fink and Brown) the Panel finds Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate interests in the <nvrt.com> domain name pursuant to Policy ¶4(a)(ii), Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent has not registered or used the <nvrt.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
Apart from those issues, the substance of this case in the opinion of the majority is that a bad faith finding would be inappropriate because Respondent bought the domain name as part of a commercial transaction involving 40 other four-letter domain names. On the evidence, Respondent had no intent or knowledge of any potential infringement on Complainant’s rights.
Brother Lowry dissents in part from the foregoing finding for the following reasons: This case turns on the interpretation of Policy ¶4(b)(i), which provides: “circumstances indicating that [Respondent] registered or [ ] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.” While there is no evidence of a price in this case, I am willing to presume Respondent was selling the four letter domain name in excess of its out of pocket costs because Respondent is not an eleemosynary institution.
The missing factor Complainant cannot directly prove is Respondent specifically targeted Complainant. Respondent denies knowing of Complainant’s existence and denies targeting Complainant. However, Respondent was clearly targeting (i) someone who had a four letter trademark as a prospective purchaser (or their competitors) or (ii) someone with a legitimate business reason to use the four letters NVRT. While Respondent may not have actually known of Complainant’s existence, Complainant was a member of the fairly small class Respondent was targeting as prospective purchasers for the domain name. I would find Respondent targeted Complainant.
By a unanimous vote, the Panel finds there are a series of coincidental circumstances that might be interpreted as bad faith “cyberflight”. However, examining the records produced by Respondent (and also noting the fact the person who sold the 41 domain names to Respondent failed timely to update the WHOIS information as required by ICANN), the Panel finds that there was no “cyberflight”. Respondent’s registration and transfer was legitimate (although it occurred over multiple days and in several steps). Respondent’s email correspondence between “Tim Schoon” and “Sebastian Kleveros” discussing the transfer occurs on January 11, 2016, before this proceeding began.
By a majority vote (Fink and Brown), the Panel therefore finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered the <nvrt.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC,
Honorable Karl V. Fink (ret.)
and Houston Putnam Lowry, Chartered Arbitrator (Chair), Panelist
Dated: Friday, March 18, 2016
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